ISCO Holding Corporation v. Nikon Corporation
REITERATIONFacts
1. The Antecedents: On September 25, 2009, ISCO Holding Corporation (ISCO), a domestic corporation, filed a trademark application for "NIKON & DESIGN" for use on home and household goods. The mark included an anchor in blue and the word "Nikon" in red. On January 24, 2011, Nikon Corporation (Nikon Corp.), a foreign corporation and prior registrant, filed a Verified Notice of Opposition, asserting its ownership, well-known status, and prior registration of the "NIKON" mark, arguing that ISCO's mark was confusingly similar and would cause damage. Nikon Corp. also contended that "NIKON" was its business name or trade name. ISCO countered with a defense of res judicata, citing previous IPO-BLA rulings that allowed the "NIKON" mark for household appliances as Nikon Corp.'s mark was only for cameras. 2. Procedural History: The Intellectual Property Office - Bureau of Legal Affairs (IPO-BLA) ruled in favor of Nikon Corp., sustaining the opposition, finding ISCO's mark identical and likely to cause confusion, and recognizing Nikon Corp.'s "NIKON" mark as well-known and its trade name. ISCO appealed to the IPO-Office of the Director General (IPO-ODG), reiterating res judicata and arguing unrelated goods. The IPO-ODG granted ISCO's appeal, dismissing Nikon Corp.'s opposition, finding no res judicata but noting visual differences and unrelated products, thus concluding no likely damage. Nikon Corp. then filed a Petition for Review with the Court of Appeals (CA). The CA reversed the IPO-ODG's ruling and reinstated the IPO-BLA's decision, finding Nikon Corp. had established that ISCO's mark could not be registered due to identity or confusing similarity with Nikon Corp.'s registered and well-known mark, and because it comprised Nikon Corp.'s trade name. 3. The Petition: ISCO filed a Petition for Review under Rule 45 of the Rules of Court before the Supreme Court, assailing the CA's Decision. ISCO also filed a Supplement to Petition for Review. The Supreme Court noted procedural infirmities: ISCO initially filed under Rule 43 (Appeals from quasi-judicial agencies to CA) instead of Rule 45 (Petitions for Review on Certiorari to SC), and the Supplement to Petition for Review did not present supervening events but merely expounded on existing issues, making it inadmissible. Despite these procedural issues, the Court proceeded to evaluate the Petition on its merits.
Issue(s)
Did the Court of Appeals commit a reversible error in ruling that ISCO cannot validly register the "NIKON" trademark for household goods and appliances? Should the Petition for Review and Supplement to Petition for Review be admitted despite procedural infirmities?
Ruling
The Petition for Review is DENIED. The Decision, dated August 26, 2020, of the Court of Appeals in CA-G.R. SP No. 154367 is AFFIRMED.
Ratio Decidendi
On Issue 1: The Supreme Court found that the CA did not commit a reversible error. First, the Court addressed the procedural infirmities, noting that ISCO filed the Petition under the wrong rule (Rule 43 instead of Rule 45) and that the Supplement to Petition for Review was inadmissible as it did not set forth supervening events. However, the Court proceeded to deny the Petition for lack of merit. Second, the Court sustained the IPO-BLA's finding, affirmed by the CA, that Nikon Corp.'s "NIKON" trademark is well-known, based on extensive evidence of registration, use, promotion, market share, distinctiveness as a coined term, and prior declarations by competent authorities. Third, applying Section 123.1(f) of the IP Code, the Court held that since Nikon Corp.'s well-known "NIKON" trademark is registered in the Philippines, ISCO's identical or confusingly similar mark cannot be registered, even if used for goods not similar to Nikon Corp.'s. Fourth, the Court determined that ISCO's and Nikon Corp.'s "NIKON" trademarks are confusingly similar under the Dominancy Test. The word "NIKON" is the dominant feature in both marks, spelled identically, and aurally the same, despite minor design differences in ISCO's mark. The Holistic or Totality Test has been abandoned. Fifth, ISCO's use of its "NIKON" trademark would indicate a connection between its household goods and Nikon Corp., as the public would likely attribute ISCO's products to Nikon Corp.'s expansion. Finally, Nikon Corp.'s interests are likely to be damaged by trademark dilution by blurring, given the high degree of similarity between the marks and the established distinctiveness and recognition of Nikon Corp.'s well-known mark. Therefore, ISCO's "NIKON" trademark cannot be registered under Section 123.1(f) of the IP Code. Additionally, the Court found that ISCO's "NIKON" trademark cannot be registered because it constitutes Nikon Corp.'s trade name, which is protected even without registration under Section 165.2 of the IP Code, and its use would likely mislead the public due to colorable imitation. On Issue 2: The Supreme Court noted that ISCO filed the Petition for Review under Rule 43 of the Rules of Court, which pertains to appeals from quasi-judicial agencies to the Court of Appeals, instead of Rule 45, which governs petitions for review on certiorari before the Supreme Court. This was deemed a patent error. Furthermore, ISCO's Supplement to Petition for Review was found inadmissible because Rule 10, Section 6 of the Rules of Court requires supplemental pleadings to set forth transactions, occurrences, or events that have happened after the date of the pleading sought to be supplemented. ISCO's supplement merely expounded on issues already raised and did not present any supervening events. Despite these procedural infirmities, the Court opted to proceed and deny the Petition on its merits, indicating that even if the procedural issues were overlooked, the substantive arguments lacked merit.
Main Doctrine
The Supreme Court affirmed that a trademark cannot be registered if it is identical with, or confusingly similar to, a well-known mark registered in the Philippines, even if used for goods not similar to those of the registered mark, provided that such use would indicate a connection between the goods and the owner of the registered mark, and the interests of the owner are likely to be damaged. This protection extends to trade names, which are protected even without registration against misleading public use. The Dominancy Test is the primary method for assessing confusing similarity.